the production itself would also protect the title." found, either in England or in the United States, in But it is only as a part of a copyrighted work and which under the copyright statutes courts have preas the title to that particular work that any title tected the title alone separate from the book or can receive protection under the copyright law; a other production which it is used to designate.10 An mere title alone is not copyrightable. It has been exclusive right to a title cannot be secured by enterintimated that possibly there could "be copyright ing it in the copyright office in advance of publiin a title, as for instance in a whole page of title or cation." Titles will be protected, however, against something of that kind requiring invention," al- use or imitation under circumstances constituting though not in a single word. But no case can be unfair competition.12 nated." Wilson v. Hecht, 44 App. (D. C.) 33, 36. "The copyright of a book does not prevent others from taking the same title for another book, though the copyright has not expired." Atlas Mfg. Co. v. Street, 204 Fed. 398, 403, 122 CCA 568, 47 LRANS 1002. [a] The title is an appendage to the work, and where the latter is not protected by a copyright the former is not. Jollie v. Jaques, 13 F. Cas. No. 7.437, 1 Blatchf. 618. [b] Title of book-In order that the title of a work may be protected by a copyright secured in the work itself, there must be some originality in such title. No exclusive right to the use of common English words can ordinarily be obtained by approprinting them as the title of a copyrighted work. Thus where the owner of a copyright in a play called "Charity" brought suit to restrain the defendant from presenting a different play under the same name, the injunction was refused. Isaacs [b] Name of novel used for play. v. Daly, 39 N. Y. Super. 511; Dicks v. -(1) "The owner of the copyright Yates, 18 Ch. D. 76, 88 (where Sir of a novel is not entitled to protecGeorge Jessel, M. R., in discussing tion against the use of that name in whether there could be copyright in connection with a dramatic composithe words "Splendid Misery" used as tion which does not present any the title of a novel, said: "I am of scenes, plot, or dialogue imitated or opinion that there cannot. The words adapted from the novel; it being the 'Splendid Misery' are common Eng- name in connection with the novel, lish words. I should say that the and not the name alone, which the combination of them was a hack-copyright_protects. Harper v. Raneyed and common combination, and nous, 67 Fed. 904." Atlas Mfg. Co. it is proved that it was used as the v. Street, 204 Fed. 398, 403, 122 CCA actual title of a novel so far back as 568, 47 LRANS 1002. (2) In the Harper case it was held that the owner 1801. It does not appear to me that there was any invention in the comof the copyright of the novel Trilby bination of 'Splendid Misery,' any was not entitled to protection against more than there would be in the the use of that name as the title of words 'Miserable Sinner,' or anything a dramatic production produced withof that kind"). out his consent, Judge Lacombe sayOriginality in general see supra §§ing: "It is the name in connection with the novel, not the name alone, which the copyright law protects.' Harper v. Ranous, 67 Fed. 904, 905. 91-97. 6. Outcault v. Lamar, 135 App. Div. 110, 119 NYS 930; Weldon V. Dicks, 10 Ch. D. 247 (where Malins, V. C., held that the title of a book is part of the book and as much the subject of copyright as the book itself); Mack v. Petter, L. R. 14 Eq. 431. [a] The holder of a copyright is entitled to protection in the copyright name as well as in the literary production where there is an infringement in whole or in part of the production which is the subject of the copyright, but the name alone is not protected by the copyright. Outcault v. Lamar, 135 App. Div. 110, 119 NYS 930 ("Buster Brown" cartoons). 7. U. S.-Atlas Mfg. Co. v. Street, 204 Fed. 398, 122 CCA 568, 47 LRANS 1002; Glaser v. St. Elmo Co., 175 Fed. 276; Corbett v. Purdy, 80 Fed. 901; Harper v. Ranous, 67 Fed. 904; Merriam v. Famous Shoe, etc., Co., 47 Fed. 411; Black v. Ehrich, 44 Fed. 793; Donnelley v. Ivers, 18 Fed. 592, 20 Blatchf. 381; Benn v. Leclercq, 3 F. Cas. No. 1,308; Jollie v. Jaques, 13 F. Cas. No. 7,437, 1 Blatchf. 618; Osgood v. Allen, 18 F. Cas. No. 10,603, Holmes 185. D. C.-Wilson v. Hecht, 44 App. 33 [quot Black v. Ehrich, 44 Fed. 793]. N. Y.-Outcault v. Lamar, 135 App. Div. 110, 119 NYS 930; Isaacs V. Daly, 39 N. Y. Super. 511; Dickey v. Mutual Film Corp., 160 NYS 609. Eng.-Kelly v. Hutton, L. R. 3 Ch. 703; Maxwell v. Hogg, L. R. 2 Ch. 307; Schove v. Schmincke, 33 Ch. D. 546; Dicks v. Yates, 18 Ch. D. 76; Kelly v. Byles, 13 Ch. D. 682 [aff 48 L. J. Ch. 682]; Weldon v. Dicks, 10 Ch. D. 247; Crotch v. Arnold, 54 Sol. J. 49. Ont.-McIndoo v. Musson Book Co., 35 Ont. L. 42, 9 OntWN 239 [dist Rose v. McLean Pub. Co., 27 Ont. 325 (app allowed 24 Ont. A. 240)]. [c] Name of cartoons used for The name of a corporation, The copyright contemplated by the Act must be not in a single word. but in some words in the shape of a volume, or part of a volume, which is communicated to the public, by which the public are benefited, and in return for which a certain tection is given to the author of the work"). pro 10. Corbett v. Purdy, 80 Fed. 901. "The right secured by the copyright act is the property in the literary composition, and not in the name or title given to it. In no case. so far as this court is advised. has protection been afforded by injunction under the copyright laws to the title alone, separate from the book or dramatic composition which it is used to designate. Osgood v. Allen. 18 F. Cas. No. 10,603, Holmes 185." Corbett v. Purdy, supra. The decision in Weldon v. Dicks. 10 Ch. D. 247, was considered by the court of appeal in Dicks v. Yates, 18 Ch. D. 76, where it was remarked that the vice-chancellor did not distinguish "passing-off." which is violation of a common-law right, from an infringement of a statutory copyright. a In "I think that the authorities, particularly the American cases, preponderate that the copyright of a from taking the same title for anbook does not prevent other persons other book, even in the case of an entirely unexpired copyright. this case, the copyright of the novel having expired, and it being open to any one to write a play based on the novel, I think it still more doubtful whether the complainants, by writing and copyrighting a play, to which they have given the same title as the novel, can prevent the defendants from giving the name of the novel to an entirely different play which has been constructed from the novel." Glaser v. St. Elmo Co., 175 Fed. 276, 278. 11. Centennial Catalogue Co. v. Porter, 5 F. Cas. No. 2,546. See also supra § 106. [a] Rule applied.-Where a person who had dramatized Collins' novel entitled "The New Magdalen" entered his version for copyright by sending in the title "The New Magdalen," it was held that this did not give him a right to the exclusive use of that title, but that another person might use it as the title for an independent dramatization of the novel. Benn v. Leclercq, 3 F. Cas. No. 1,308. [e] The same rule applies to patents. Mr. Justice Brewer expressiy said in the Castoria case that the patent gave no right to any particular name, but simply conferred the exclusive right to make and sell the patented article to which the name was applied. Centaur Co. v. Heinsfurter, 84 Fed. 955, 956, 28 CCA 581. See also Trade-Marks, TradeNames, and Unfair Competition [381, 151 CCA 77; Glaser v. St. Elmo Co., Cyc 827]. 8. Dicks v. Yates, 18 Ch. D. 76, 89. The name or title of a book is not the subject-matter of copyright, unless, in form and language. it constitutes a literary composition of the author." 8 Halsbury L. Eng. p 143. 9. Maxwell v. Hogg, L. R. 2 Ch. 307, 318 (where Lord Cairns said: "I apprehend, indeed, that if it were necessary to decide the point, it "It is well settled that the owner must be held that there cannot be of the thing copyrighted acquires what is termed copyright in a sinthrough the copyright no propertygle word, although the word should in the name by which it is desig- be used as a fitting title for a book. 12. Merriam v. Syndicate Pub. Co.. 207 Fed. 515, 125 CCA 177 [app dism 237 U. S. 618, 35 SCt 708, 59 L. ed. 1148]; G. & C. Merriam Co. v. Saalfield, 190 Fed. 927, 111 CCA 517. 198 Fed. 369. 117 CCA 245, 238 Fed. 175 Fed. 276; G. & C. Merriam Co. v. Ogilvie, 170 Fed. 167, 95 CCA 423; G. & C. Merriam Co. v. Ogilvie. 149 Fed. 858 [mod on other grounds 159 Fed. 638, 88 CCA 596, 16 LRANS 549, 14 AnnCas 796 (certiorari den 209 U. S. 551, 28 SCt 761, 52 L. ed. 922)]; Merriam v. Straus, 136 Fed. 477; Social Register Co. v. Murphy, 128 Fed. 116; Harper v. Holman, 84 Fed. 224; Merriam v. Texas Siftings Pub. Co., 49 Fed. 944; Merriam V. Famous Shoe, etc., Co., 47 Fed. 411; Merriam v. Holloway Pub. Co., 43 Fed. 450; Outcault v. Lamar, 135 App. Div. 110, 119 NYS 930; Dickey v. Mutual Film Corp., 160 NYS 609; VI. WHO ENTITLED TO COPYRIGHT [144] A. Statutory Provisions-1. General Statement.13 In the United States for many years the statutory designation of the persons entitled to obtain copyright upon copyrightable works was: "The author, inventor, designer, or proprietor. . and the executors, administrators, or assigns of any such person. 99 14 In the act of 1909, the persons entitled to copyright are designated as "the author or proprietor or his executors, administrators, or assigns. "15 Not every author or proprietor is entitled to copyright; there are certain limitations and restrictions dependent on citizenship and residence.16 In England the statute provides that the author shall be the first owner of the copyright, except where the work is executed on commission, or made in the course of employment under a contract of service or apprenticeship, in which cases the copyright belongs to the employer, and except also gov ernment publications, the copyright of which belongs to the crown, subject to any agreement with the author, and mechanical reproductions, the copyright of which belongs to the owner of the original plate from which the contrivance was derived.17 Where the work is an article or other contribution to a newspaper, magazine, or similar periodical, in the absence of any agreement to the contrary, the right is reserved to the author to restrain the publication of the work otherwise than as a part of a newspaper, magazine, or similar periodical.18 [§ 145] 2. Limitation to Persons Named. The · statutory designations are exclusive; an ostensible copyright by one not within the statutory description is wholly void.19 Thus one who, without express or implied authority from the author, goes through the forms of copyrighting another's composition obtains no copyright. A mere licensee, being neither the author nor the proprietor, may thought to infringe on the title [c] Descriptive title of comedy; 20 the United States at the time of the first publication of his work, or (c) A citizen or subject of any country which grants either by treaty, convention, agreement, or law, to citizens of the United States the benefit of copyright on substantially the same basis as to its own citizens. The existence of reciprocal copyright conditions is determined by presidential proclamation. The (2) The proprietor of a work. (3) The executors. administrators, Bul. No. 15) rule 2. Kelly v. Hutton, L. R. 3 Ch. 703; Maxwell v. Hogg, L. R. 2 Ch. 307; Licensed Victuallers' Newspaper Co. v. Bingham, 38 Ch. D. 139; Borthwick v. Evening Post, 37 Ch. D. 449; Kelly v. Byles, 13 Ch. D. 682; Dicks V. Yates, 18 Ch. D. 76; Weldon v. Dicks, 10 Ch. D. 247 [expl Dicks v. Yates, supra]; Metzler v. Wood,_8 Ch. D. 606; Mack v. Petter, L. R. 14 Eq. 431; Clement v. Maddick, 1 Giffard 98, 65 Reprint 841: Chappell v. Davidson, 2 Kay & J. 123, 69 Reprint 719; Chappell v. Sheard, 2 Kay & J. 117. 69 Reprint 717 (name of song); Walter v. Emmott, 54 L. J. Ch. 1059; Bradbury v. Beeton, 39 L. J. Ch. 57: Spottiswoode v. Clarke, 2 Phil. 154. 22 EngCh 154, 41 Reprint 900. See Trade-Marks, Trade-Names, and Unfair Competition [38 Cyc 831]. [a] "Literary property can be invaded in three modes, and, as I believe, in three modes only. First, where a publisher in this country publishes an unauthorized edition of a work in which copyright exists, or where a man introduces and sells a foreign reprint of such a work, that is open piracy. The second mode is where a man pretending to be the author of a book illegitimately appropriates the fruit of a previous author's literary labour, and that is literary larceny. Those are the two modes of invasion against which the Copyright Acts have protected an author. There is another mode which to my mind is wholly irrespective of any copyright legislation, and that is where a man sells a work under the name or title of another 14. Rev. St. § 4952; Act March man or another man's work, that is 3, 1891 (26 St. at L. 1107 c 565 § 1). not an invasion of copyright, it is [a] Provisions of the successive Common Law fraud, and can be re-acts. The first copyright act of the dressed by ordinary Common Law United States, that of 1790, in proremedies, wholly irrespective of any viding for copyright in any map. of the conditions or restrictions im-chart, or book gave the right to the posed by the Copyright Acts. Sup- "author and authors posing a man were to publish a book their executors, administrators or calling it 'Soyer's Cookery Book,' assigns." 1 St. at L. 124 c 15 § 1. ican Tobacco Co. which it is not; or 'Colenso's Arithmetic, which it is not; or, as in a case we had here, Metzler v. Wood, 8 Ch. D. 606, represent it as being 'Hemy's Modern Tutor for the Pianoforte, which it is not, that is a Common Law fraud. That, as I said before, has nothing whatever to do with the Copyright Acts, and is not subject to any of the conditions of the Copyright Acts as to registration or otherwise." Dicks v. Yates, 18 Ch. D. 76, 90 (per James, L. J.). [b] Applications of rule. (1) Where a dramatic composition has been copyrighted, another will be enjoined from using the same title. although the body of the composition is wholly different from that of the copyrighted play. Shook V. Wood, 10 Phila. (Pa.) 373 ("The Two Orphans" enjoined on ground of unfair competition). (2) "The Children's Birthday Text Book" was 13. Persons entitled to renewal or extension see infra § 239. Citizenship and residence see infra § 157 et seq. his or The act of 1802 (2 St. at L. 171) 16. See infra §§ 157-162. Citizenship: Who are citizens see Aliens § 3; Citizens 11 C. J. p 772. 17. Copyright Act, 1911 (1 & 2 Geo. V c 46 §§ 5 (1), 19 (1)). 18. St. 1 & 2 Geo. V c 46 § 5 (1). 19. Banks v. Manchester, 128 Ú. S. 244, 9 SCt 36, 32 L. ed. 425 [aff 23 Fed. 1431; Press Pub. Co. v. Falk, 59 Fed. 324; Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; Binns v. Woodruff, 3 F. Cas. No. 1,424, 4 Wash. C. C. 48; Chase v. Sanborn, 5 F. Cas. No. 2,628, 4 Cliff. 306; Koppel v. Downing, 11 App. (D. C.) 93: Levy v. Rutley, L. R. 6 C. P. 523; Jefferys V. Baldwin, Ambl. 164, 27 Reprint 109; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140; Langlois v. Vincent. 18 LCJur 160. 20. Ferris v. Frohman, 223 U. S. 424, 32 SCt 263, 56 L. ed. 432; AmerV. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595; Dielman White, 102 Fed. 892; Koppel v. Downing, 11 App. (D. C.) 93; Stern v. Carl Laemmle Music Co., 74 Misc. 262, 133 NYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem]. V. "If title was in plaintiffs, then it was not in defendant. If it was not in defendant when he applied for a copyright, then the Federal court has no jurisdiction of the case, because defendant obtained nothing by his application for a copyright." Stern v. Carl Laemmle Music Co., supra. 15. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 8]. [a] The proprietor of an unpub[a] Copyright office summary.-lished drama may enjoin a piratical "The persons entitled by the act to version thereof, although the latter copyright protection for their works has been entered for copyright. Ferris v. Frohman, 223 U. S. 424, 32 SCt 263. 56 L. ed. 492. are: (1) The author of the work, if he is: or (b) An alien author domiciled in [b] Official reporters cannot obtain a copyright in headnotes written by the judges delivering the 22 not take out a copyright himself," nor, by virtue 27 opinion. Chase v. Sanborn, 5 F. Cas. No. 2,628, 4 Cliff. 306. [c] Appropriation of sketch from foreign publication-One who appropriates a sketch from a foreign publication, and records the description and complies with the other formal requisites of the act for obtaining copyright, obtains no exclusive right to it, because he is not the author, designer, or proprietor of the sketch. Johnson v. Donaldson, 3 Fed. 22, 18 Blatchf. 287. Originality and authorship necessary see supra §§ 91-97. 21. Koppel v. Downing, 11 App. (D. C.) 93. See also infra § 151. [a] But in another connection, the act of 1909 speaks of a copyright obtained by "a licensee of the individual author." See Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 23). 22. Koppel v. Downing, 11 App. (D. C.) 93. [a] Rule applied.-Where the proprietor of a manuscript translation of a play licenses a theater manager to use the translation for a specific purpose, the licensee cannot confer on a printer and publisher of the play the power to copyright it, and a copyright so attempted to be taken out is invalid. Koppel v. Downing, 11 App. (D. C.) 93. 23. Broder V. Zeno Mauvais Music Co., 88 Fed. 74; Byrne v. Statist Co., [1914] 1 K. B. 622. See also supra 144. [147] 2. Joint Authors. Copyright may vest in two or more persons as joint authors of a production, where it is the result of a preconcerted joint design.37 So too there may be owners in common of copyright.38 [§ 148] 3. Photographs.39 The author of a photograph is the one who controls the operation of taking the photograph and not the one who performs the manual operations under his direction." Springfield v. Thame, 89 L. T. Rep. N. S. 242. 2 Q. B. 340]; Boosey v. Fairlie, 7 ute. [a] Patents and copyrights dis- Originality and authorship, what constitutes see supra §§ 91-97. 26. Nisbet v. Golf Agency, 23 T. L. R. 370 (compiler). See also supra §§ 91-97. 27. Schuberth v. Shaw, 21 F. Cas. No. 12,482; Walter v. Lane, [1900] A. C. 539, 2 BRC 312; Tree v. Bowkett. 74 L. T. Rep. N. S. 77; Nisbet v. Golf Agency, 23 T. L. R. 370. [a] Biographer not appointed by [a] Biographical notes made from subject of work-The fact that the replies to inquiries-Plaintiffs sent person who writes a biography and out questions to a number of golf has it copyrighted was not desig-players, and from the answers comnated by the subject of the biog-piled biographical notes in a golf raphy as his special biographer can- annual. Plaintiffs were the "aunot of course have any effect on the validity of the copyright. Gilmore v. Anderson, 38 Fed. 846. 24. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 62); Copyright Act, 1911 (1 & 2 Geo. V c 46 SS 5, 19. 21). See also infra § 149. [a] In the English act of 1911 no definition of the term "author" is given other than that contained in 85 (1), which provides that, subject as therein mentioned, the author of a work is the first owner of the copyright therein, and § 21. which provides that the owner of the original negative of a photograph is deemed to be the author of the work, and § 19 (1), which defines the author of a mechanical work. 25. Burrow-Giles Lith. Co. v. Sarony, 111 U. S. 53. 66, 4 SCt 279, 28 L. ed. 349 [quot Nottage v. Jackson, 11 Q. B. D. 627]; Blume v. Spear, 30 Fed. 629; De Witt v. Brooks. 7 F. Cas. No. 3,851; Atwill v. Ferrett. 2 F. Cas. No. 640, 2 Blatchf. 39; Reed v. Carusi, 20 F. Cas. No. 11,642, Taney 72; Kenrick v. Lawrence, 25 Q. B. D. 99; Nottage v. Jackson, 11 Q. B. D. 627; Wood v. Boosey, L. R. 3 Q. B. 223, 18 ERC 578 [aff L. R. thors" of the biographical notes. 28. Tree v. Bowkett, 74 L. T. Rep. [a] Adapter of play an author.The adapter of a play, who introduces into his version material alterations, is an "author of a dramatic piece," within the English Dramatic Copyright Act (3 & 4 Wm. IV c 15). Tree v. Bowkett, 74 L. T. Rep. N. S. 77. 29. Wood v. Boosey, L. R. 3 Q. B. 223, 18 ERC 578. See also supra § 111. [a] Piano score of opera.-The 30. Springfield v. Thame, 89 L. [a] A newspaper paragrapher who condenses and rewrites a news article is the author of the published paragraph, and not the contributor of the original story, who is therefore not entitled to the copy'right under the former English stat 31. Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1. 32. Byrne v. Statist Co., [1914] 1 K. B. 622. See also supra § 127. "A translator of a literary work has for many years been held to be the author of his translation, and the House of Lords. in Walter v. Lane, [1900] A. C. 539, went so far as to hold that a shorthand writer who reported a speech verbatim was the author of his report." Byrne v. Statist_Co., [1914] 1 K. B. 622, 627. 33. Walter v. Lane, [1900] A. C. 539 [rev [1899] 2 Ch. 749]. 34. 892. 35. 36. 892. Dielman v. White, 102 Fed. See infra §§ 150-153. Fed. 37. Maurel V. Smith, 220 Fed. 195; Marzials v. Gibbons, L. R. 9 Ch. 518; Levy v. Rutley, L. R. 6 C. P. 523. See also supra § 27. [a] Constructive trust in copyright.-Where two of three joint authors of a comic opera took out copyrights thereon, they became constructive trustees for the third author, and were accountable to her for her interest in the literary property destroyed by the publication and copyright. Maurel v. Smith, 220 Fed. 195. [b] Subsequent consent to unauthorized copyright. Where two of the joint authors of a comic opera had it published and copyrighted, even though the third author did not consent thereto, and although the absence of her consent avoided publication, she might accept the wrongful publication and insist on her proprietary rights, as though she had consented at the outset. Maurel v. Smith, 220 Fed. 195. exe [c] Who are joint authors.-One who conceives the idea of a drawing and employs an artist to cute it under his direction may be deemed a joint author with the artist. Kenrick v. Lawrence, 25 Q. B. D. 99. See also supra § 27. 38. Carter v. Bailey, 64 Me. 458, 463. 18 AmR 273; Stevens v. Wildy, 19 L. J. Ch. 190; Powell v. Head, 12 Ch. D. 686 (joint owners of copyright take as tenants in common and not as joint tenants). "If there be more than one author or assignee, all of either class, as the case may be, may have the copyright." Carter v. Bailey, supra. 39. Photographs: Common-law property in see supra § 17. Statutory copyright in see supra § 118. 40. Burrow-Giles Lith. Co. v. Sarony, 111 U. S. 53, 4 SCt 279, 28 L. ed. 349 [aff 17 Fed. 591]; Melville v. Mirror of Life Co., [1895] 2 Ch. 531; Nottage v. Jackson, 11 Q. B. D. 627. [a] Authorship as applied to photographs.-"The third finding of fact says, in regard to the photograph in question, that it is a 'useful, 43 45 it within the meaning of those terms as used in the statute.* The act of 1909, however, expressly provides that the word "author" shall include an employer in the case of works made for hire.46 47 49 [§ 150] C. Proprietors-1. In General. Although the use of the word "proprietor" in the copyright laws is as old as the legislation on the subject, the act of 1870 for the first time used the word in connection with the words "author, inventor, and designer," as one of the persons who may obtain a copyright.48 It has continued to be so used ever since." As between the author and (1) The person who suggests to another the general ideas on which a sketch is to be framed is not the author of the sketch within the meaning of the act. Tate v. Fullbrook, [1908] 1 K. B. 821, 2 BRC 93, 14 AnnCas 428. (2) "But I do not see how a gentleman who is incapable of drawing even such a very simple picture as a rough sketch of the human hand, and who did not, in fact, set pencil to paper in the matter, can be called the author of the drawing. He suggested the subject, and made such limited suggestions as to the treatment as the subthat in an Act which gives copyright to drawings the author must mean a person who has at least some substantial share in putting the touches on to paper. Such was very clearly the view of every member of the Court of Appeal in Nottage v. Jackson, 11 Q. B. D. 627, and although that case might perhaps have been without decided saying what is meant by the author of a drawing or painting, and so, perhaps, in a strict very the observation was extra-judicial, still it was very nearly necessary to the determination of that case, and I should follow it even if I differed from it. But as it entirely expresses my own view, I can act upon my own view with less hesitation." Kenrick v. Lawrence, 25 Q. B. D. 99, 106. 41. Melville v. Mirror of Life Co., [1895] 2 Ch. 531, 535 (where Nottage v. Jackson, 11 Q. B. D. 627, was distinguished on the ground that in that case the principal who claimed the copyright was not present at the taking of the photograph. Kekewich, J., said: "In that case, no doubt,ject admitted of; but it seems to me the principal was the gentleman who sent some one to Kennington Oval to take the photographs of the Australian cricketers playing there, and the court did not see its way to saying that a gentleman sitting in his room in Regent Street could be the author of a photograph which was being taken at Kennington Oval"); Wooderson v. Tuck. [1887] W. N. 209. See also infra § 149. [§ 149] 4. Works Made for Hire. A work may be so far the product of the mind of its designer that he will be considered the author of it, although he has had no part in its actual or manual execution;42 but a mere suggestion of the subject, without a share in the design or execution, is insufficient to warrant a claim of authorship. While one person by employing another to produce a work may become the "proprietor" of the production," he is not the "author, ‚" "inventor," or "designer" of new, harmonious, characteristic, and I from the original judgment against graceful picture, and that plaintiff them was accordingly dismissed. made the same entirely from These views of the nature of authorhis own original mental concep- ship and of originality, intellectual tion to which he gave visible form creation, and right to protection conby posing the said Oscar Wilde in firm what we have already said.' front of the camera, selecting and Burrow-Giles Lith. Co. v. Sarony, arranging the costume, draperies, 111 U. S. 53, 60, 4 SCt 279, 28 L. ed. and other various accessories in said 349 [aff 17 Fed. 591]. photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit.' These findings, we think, show this photograph to be an original work of art, the product of plaintiff's intellectual invention, of which plaintiff is the author, and of a class of inventions for which the Constitution intended that Congress should secure to him the exclusive right to use, publish and sell, as it has done by section 4952 of the Revised Statutes. The question here presented is one of first impression under our Constitution, but an instructive case of the same class is that of Nottage v. Jackson, 11 Q. B. D. 627, decided in that court on appeal, August, 1883. The first section of the act of 25 and 26 Victoria, chap. 68, authorizes the author of a photograph, upon making registry of it under the copyright act of 1882, to have a monopoly of its reproduction and multiplication during the life of the author. The plaintiffs in that case described themselves as the authors of the photograph which was pirated, in the registration of it. It appeared that they had arranged with the captain of the Australian cricketers to take a photograph of the whole team in a group; and they sent one of the artists in their employ from London to some country town to do it. The question in the case was whether the plaintiffs, who owned the establishment in London, where the photographs were made from the negative and were sold, and who had the negative taken by one of their men, were the authors, or the man who, for their benefit. took the negative. It was held that the latter was the author, and the action failed, because plaintiffs had described themselves as authors. Brett, M. R., said, in regard to who was the author: "The nearest I can come to, is that it is the person who effectively is as near as he can be, the cause of the picture which is produced, that is, the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be-the man who is the effective cause of that.' Lord Justice Cotton said: 'In my opinion, "author" involves originating, making, producing, as the inventive or master mind, the thing which is to be protected, whether it be a drawing, or a painting, or a photograph;' and Lord Justice Bowen said that photography is to be treated for the purposes of the act as an art, and the author is the man who really represents, creates, or gives effect to the idea. fancy, or imagination. The appeal of plaintiffs 42. Hatton v. Kean, 7 C. B. N. S. 268, 97 ECL 268, 141 Reprint 819; Stannard v. Harrison, 24 L. T. Rep. N. S. 570. "I am of opinion, that, under that statute [8 Anne c 19], the person, who forms the plan, and who emand who employs various persons to barks in the speculation of a work, compose different parts of it, adapted to their own peculiar acquirements that he, the person who so forms the plan and scheme of the work, and pays different artists of his own selection, who, upon certain conditions, contribute to it, is the author and proprietor of the work, if not within the literal expression, ing of the statute of Anne, which, at least within the equitable meanbeing a remedial law, is to be construed liberally." Per Sir John Leach in Barfield v. Nicholson, 2 L. J. Ch. O. S. 90. 102 [quot Shepherd v. Conquest, 17 C. B. 427, 443, 84 ECL 427, 139 Reprint 1140]. 43. Binns v. Woodruff, 3 F. Cas. No. 1,424, 4 Wash. C. C. 48; Tate_v. Fullbrook, [1908] 1 K. B. 821, 2 BRC 93, 14 Ann Cas 428; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140. "We do not think it necessary in the present case to express any opinion whether, under any circumstances, the copyright in a literary work, or the right of representation, employer other than the person who has actually composed or adapted a literary work. It is enough to say, in the present case, that no such effect can be produced where the employer merely suggests the subject, and has no share in the design or execution of the work, the whole of which, so far as any character of originality belongs to it, flows from the mind of the person employed. can become vested ab initio in an It appears to us an abuse of terms to say, that, in such a case, the employer is the author of a work to which his mind has not contributed an idea: and it is upon the author in the first instance that the right is conferred by the statute which creates it." Shepherd v. Conquest. 17 C. B. 427. 444. 84 ECL 427. 139 Reprint 1140 (per Jervis, C. J.). [a] Suggestion of idea for sketch. sense, [b] The person who conceived the idea of an engraving, where neither the design nor the general arrangement of the print was his invention, but who employed others to compose and execute the print, who designed and arranged the print and cuted the same, is not entitled to a the parts that composed it and execopyright, under the act of April 29, 1802. Binns v. Woodruff, 3 F. Cas. No. 1,424, 4 Wash. C. C. 48. 44. See infra 45. 152. Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; De Witt v. Brooks. 7 F. Cas. No. 3,851; Pierpont v. Fowle, 19 F. Cas. No. 11,152, 2 Woodb. & M. 23; Kenrick v. Lawrence, 25 Q. B. D. 99; Levy v. Rutley, L. R. 6 C. P. 523 (joint authorship); Jeffreys v. Baldwin, Ambl. 164, 27 Reprint 109; Shepherd v. Conquest, 17 C. B. 427, 84 ECL 427, 139 Reprint 1140. [a] A person who hires another to write a book and gives him the description and scope of the work is not the author. The literary man who writes the book and prepares it for publication is the author, and the copyright is intended to protect him and not the person who employed him. De Witt v. Brooks, 7 F. Cas. Photographs see supra § 148. 46. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 62); Gaumont Co. v. Hatch, 208 Fed. 378; National Cloak, etc., Co. v. Kauffman, 189 Fed. 215. No. 3,851. 47. See 1 U. S. St. at L. 124 c 15 §§ 2, 3, 4, 6; 2 U. S. St. at L. 171 c 36 §§ 1, 3; 4 U. S. St. at L. 436 c 16 § 3; 11 U. S. St. at L. 139 c 169 § 1; 13 U. S. St. at L. 540 c 126 § 2; 8 Geo. II c 13 § 1; 17 Geo. III c 57. 48. 16 U. S. St. at L. 198 c 230 § 86. 49. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 8); U. S. Rev. St. § 4952. the proprietor, the sole right of copyright is in the proprietor.50 52 [151] 2. Who is a Proprietor.51 The word "proprietor,' as used in the copyright law, includes the author, inventor, or designer and his assigns. The owner of the incorporeal commonlaw right, as distinguished from the owner of the physical object, such as a manuscript or a painting, is the proprietor entitled to copyright.53 But a mere licensee is not a proprietor, and hence is not entitled to copyright the licensed work.54 Where 55 the author or proprietor has granted to another only certain limited rights in his production, less than the whole ownership, such as the right to make only serial or magazine publication, or to dramatize or perform it, or to make other like limited uses of it,57 the other rights being reserved to the author or his assigns, such owner of the limited right is a mere licensee, not a proprietor,5 and cannot obtain a valid copyright for the author's work." But if such person is authorized by the author or proprietor to take out the copyright 59 50. Dielman v. White, 102 Fed. | 20 AnnCas 1173 [aff 166 Fed. 589]; 892. 51. Law reports see infra § 163. 52. Dam v. Kirk la Shelle Co., 166 Fed. 589 [aff 175 Fed. 902, 99 CCA 392, 41 LRANS 1002, 20 Ann Cas 1173]. [a] The term "proprietor" (1) is not limited to the person who has a copyrightable thing made for him under such circumstances as to become the proprietor, as, for instance, one who causes a digest to be compiled or a picture to be painted. American Tobacco Co. V. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595. (2) "Construing these statutes together, it would seem that the word 'proprietor,' in the fourth section, must practically have the same meaning as legal assigns' in the first section, and was designed to give to the legal | assignee of any author or authors the right to take out the copyright in his own name." Mifflin v. R. H. White Co., 190 U. S. 260, 262, 23 SCt 769, 47 L. ed. 1040 [aff 112 Fed. 1004, 50 CCA 661, 61 LRA 134 (aff 107 Fed. 708)]. [b] Assignee of right to reproduce a painting-Where an artist sold to one person a picture which he had painted, reserving all rights of reproduction, and afterward assigned the exclusive right of reproduction, publication, and copyright to another person, it was held that the latter person became the "proprietor" of the painting within the meaning of that term as used in the copyright law, and that the statutory copyright therein was properly secured by him. Werckmeister v. Springer Lith. Co., 63 Fed. 808. Το same effect American Tobacco Co. V. Werckmeister, 207 U. S. 284, 28 SCt 72. 52 L. ed. 208, 12 AnnCas 595. Employer or employee see infra § 152. Photographer infra 153. or customer see 53. American Tobacco Co. V. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595; Bong v. Alfred S. Campbell Art Co., 155 Fed. 116, 83 CCA 576 [aff 214 U. S. 236, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126]. See also supra §§ 5, 67, 146. Ford v. Charles E. Blaney Amuse- a "The claim seems to be that when periodical contains articles or pictures made by persons who have not transferred their rights to the publisher the copyright of the periodical does not cover them. We have no reason to question the correctness of the defendant's contention. It is sufficient to say that the trial court ruled in accordance therewith and submitted the question involved to the jury. The verdict established that the artists sold their rights in these pictures to the plaintiff." Mail, etc., Co. v. Life Pub. Co., supra. 58 of no great difficulty. See infra 180. (3) Another safe way is to provide by express contract that the magazine proprietor shall copyright the contribution in his own name as trustee for all parties in interest. Harper v. Donohue, 144 Fed. 491 [aff 146 Fed. 1023 mem, 76 CCA 678 mem]. See also cases infra note 60; and infra § 156. 56. Saake v. Lederer, 174 Fed. 135, 98 CCA 571 [rev 166 Fed. 810]; Koppel v. Downing, 11 App. (D. C.) 93. [a] Rule applied.-A contract by which a foreign author of a dramatic composition granted the stage rights in the United States to another, and agreed to copyright the play in this country, did not convey the author's right of copyright, and an attempted copyright by the grantee in his own name was invalid and will not support an action by him for infringement. Saake v. Lederer, 174 Fed. 135, 98 CCA 571 [rev 166 Fed. 810, and dist Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514]. [a] Rule applied to magazine serial-(1) Dr. Oliver Wendell Holmes lost the copyright of the "Professor at the Breakfast Table" by licensing its serial publication in the Atlantic Monthly while retaining for himself the general ownership of it. Mifflin v. R. H. White Co., 190 U. S. 260, 263, 23 SCt 769, 47 L. ed. 1040 [aff 112 Fed. 1004, 50 CCA 661, 61 LRA 134 (aff 107 Fed. 708)] (where the court said: "The entry of the Atlantic Monthly by Ticknor & Fields was evidently not intended for the protection of the author of each article therein appearing, but for their own protection, and to prevent the republication of the December number of the Atlantic Monthly. While, without further explanation, it might, perhaps, be inferred that the author of a book who places it in the hands of publishers for publication, might be presumed to intend to authorize them to obtain a copyright in their own names, Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328, it is apparent that there was no such intention in this case, inasmuch as almost immediately after the publication of the December number of the magazine, Dr. Holmes himself entered the book under its correct title for copyright. That right was never assigned until 1895, when it was turned over to the plaintiffs by(1) Where an author sells the executor of the author. Had the copyright been entered by Ticknor & Fields, as agents of Dr. Holmes, it is possible it might have been sustained, but there is nothing to in [b] A mere temporary licensee in the use of the manuscript of a play does not come within the meaning of the term "proprietor" so as to be entitled to enter the play for copyright. Koppel v. Downing, 11 App. (D. C.) 93. 57. Fitch v. Young, 230 Fed. 743 [aff 239 Fed. 1021 mem. 152 CCA 664 mem] (right to publish with dramatic rights reserved to author), 54. Mifflin v. R. H. White Co., 190 U. S. 260, 23 SCt 769, 47 L. ed. 1040 [aff 112 Fed. 1004, 50 CCA 661, 61 LRA 134 (aff 107 Fed. 708)]; White-dicate that Ticknor & Fields were Smith Music Pub. Co. v. Apollo Co., 139 Fed. 427 [aff 147 Fed. 226, 77 CCA 368 (aff 209 U. S. 1, 28 SCt 319, 52 L. ed. 655, 14 AnnCas 628)]; Fraser v. Yack, 116 Fed. 285, 53 CCA 563. See also American Tobacco Co. v. Werckmeister, 207 U. S. 284. 28 SCt 72. 52 L. ed. 208, 12 AnnCas 595 (where this point was raised and considered good, but the court found that the claimant was a proprietor and not a mere licensee). And see supra § 145. Assignments and licenses generally see infra §§ 245-262. 55. Mifflin v. R. H. White Co., 190 U. S. 260, 23 SCt 769. 47 L. ed. 1040 [aff 112 Fed. 1004. 50 CCA 661. 61 LRA 134 (aff 107 Fed. 708)1: Holmes v. Hurst, 174 U. S. 82, 19 SCt 606. 43 L. ed. 904: Mail, etc.. Co. v. Life Pub. Co., 192 Fed. 899. 900, 113 CCA 377; Dam v. Kirk la Shelle Co., 175 Fed. 902, 99 CCA 392, 41 LRANS 1002, acting for any one else than them- can derive any additional support from the fact that Ticknor & Fields chose to copyright the final chapters of the work in the Atlantic Monthly, since there is nothing to indicate that he even knew that any such proceeding was contemplated, much less that he authorized it"). See also Mifflin v. Dutton, 190 U. S. 265, 23 SCt 771, 47 L. ed. 1043 (where, under somewhat similar circumstances, the copyright was lost in "The Minister's Wooing" by Harriet Beecher Stowe). (2) The safe way to secure the author's rights in such cases is to have the copyright in his contributions separately registered in his own name-a matter "The peculiar form of assignment of rights of reproduction, conveying part and reserving part, presents an interesting question which need not be here discussed." Bong v. Alfred S. Campbell Art Co., 155 Fed. 116. 83 CCA 576 [aff 214 U. S. 236, 29 SCt 628, 53 L. ed. 979, 16 AnnCas 1126]. 58. License distinguished from assignment see infra § 248. 59. Fitch v. Young, 230 Fed. 743 [aff 239 Fed. 1021 mem, 152 CCA 664 mem]; Harper v. Donohue, 144 Fed. 491 [aff 146 Fed. 1023 mem. 76 CCA 678 mem]. And see cases supra notes 55-58. a [a] Reservation of dramatic rights. story to a magazine, but reserves the right to dramatize it, it is doubtful whether a copyright of the magazine containing the story will be sufficient to protect the dramatic rights. Dam v. Kirk la Shelle Co., 175 Fed. 902, 905, 906, 99 CCA 392. 41 LRANS 1002, 20 AnnCas 1173 [aff 166 Fed. 589] (where the court said: **The next question is whether the publishing company as proprietor of the story duly complied with the statute and obtained a valid copyright protecting the dramatic rights. No question is raised but that the publishing company took all the steps required by the statute to enter for copyright in its own name the number of the Smart Set magazine containing the story under the title of the magazine. It is claimed, however, that such steps accomplished no more than to obtain such protection as the publishing company needed as publishers of the maga zine. Assuming that Dam retained the dramatic rights to the story, there would be much force in this contention. In such a case we doubt very much whether the steps which |